100 F. 87 | U.S. Circuit Court for the District of New Jersey | 1900
This is a suit brought to restrain infringement of letters patent No. 472,230, granted April 5, 1892, to the Wymble Manufacturing Company, as assignee of John H. Scharling, the defendant, for an improved process of decorating glass. The bill recites that John II. Scharling, being the first and original inventor of certain new and useful improvements in processes for decorating glass, made application for letters patent therefor, in due form of law, and complied with all the requirements of the statute in such cases made and provided, and that by an instrument in writing dated February 11, 1891, he sold, assigned, and transferred unto the Wymble Manufacturing Company, a New Jersey corporation, all of his right, title, and interest in and to the invention, and in
“(1) The process hereinbefore described of applying metal to articles having nonconducting surfaces, which consists in repeatedly pouring a solution of metallic salts over the article until the -latter is completely covered, slowly turning or moving the article during such process, and finally subjecting said article to the action of an electroplating bath. (2) A glass or other article of a round or irregular shape, having applied directly on its surface a thin film or envelope of deposited metal, producing a bright inner surface on the article, and a second deposit of thicker metal applied to the first deposit, certain portions of said metals being cut away, as described.”
The first claim is for a process, and the second is for the resulting product of that process. The two defenses made by defendant are— First, that, by reason of the prior state of the art, the claims of the patent in suit are so limited that no act of this defendant can be considered as an infringement thereof; and, second, the defendant denies that he has practiced or us.ed the invention as contained in said letters patent, or that he has sold or made any articles in accordance therewith. In support of the first defense, the defendant has put in evidence the Power, Cimeg, Pratt, and Zgraggen patents, some of them very old, and all of them antedating the patent in suit, and certain publications, all of which he claims tend to show that it was old at the date of the application of the patent in suit to deposit a film of silver directly upon a nonconducting surface, such as glass, by pouring the silver solution repeatedly over the same, and then to cover said film by electro deposition of metal upon it. He has also introduced the testimony of witnesses tending to show that the product described in claim 2 was old. It is to be observed that this suit has been brought against John H. Schar-ling, the inventor of the process, and assignor of the letters patent in suit, and he is therefore estopped from denying the validity of 'the patent. Defenses that would be open to others sued for an infringement of the patent in suit are not open to him. Counsel for defendant do not deny this proposition, which rests upon well-established principles lying at the foundation of the doctrine of estop-pel. They contend, however, that the defendant may still, by showing the prior state of the art, so limit the scope of the invention covered by the patent as to leave any process practiced by defendant, or product made by him in pursuance thereof, outside of the claims of the patent, in suit.
I think the evidence adduced for this purpose, and which has been referred to above, would, if it had the effect intended, confine the first claim to a process in which the article to be treated was “slowly turned or moved” during such treatment. But I cannot consider this evidence in this way. It attacks the validity of the claim in its entirety. The “slowly turning” of the article is not entitled to be called a distinct step in the process, and cannot properly be separated from the process as a whole. The defendant must not be permitted to stultify himself, by asserting that the simple act of “turning” the article slowly, while it received its baptism of silver solution, was the process he invented. This evidence must be considered, then, as tending to deny the validity of the patented pro
Evidence tending to prove that glass bottles and other round or irregular shaped glass articles have been decorated with silver or other metal, showing a bright inner surface next the glass, before the date of this patent, is evidence that attacks its validity by showing want of novelty. As I said before, such a defense is not open to the defendant in this case. I do not, however, pass upon the question whether this evidence would or would not be sufficient .to defeat a suit on this patent, brought against other parties than this defendant. I think the complainant in this case has sufficiently established, by his original and supplementary proof, the fact that this defendant, John II. Scharling, has practiced the process of the patent in suit since his assignment thereof, and since the title has been in complainant. I think he has also established, by the same proof, that the said defendant has made, dealt in, and used the articles covered by the second claim of the patent in suit. It is true that the defendant in his answer has, upon oath, denied in general terms (hat he has in any way infringed the rights secured by said letters patent, by “unlawfully” or “wrongfully” using or practicing the process, or in making, using, or selling any articles made in accordance therewith. This denial puts upon the complainant the burden of overcoming it by preponderating testimony, which must generally be that of more than one witness, or that of one witness with corroborative circumstances. A careful examination of the testimony in this case has brought the court to the conclusion that this has been done.
I have no doubt, upon the testimony of Frederick W. Bray and others, that the decorated bottles produced in evidence, and filed as exhibits, were bought from the defendant. It is true that the defendant testifies that the business was carried on by a partnership, consisting of Helene Scharling, John H. Scharling, and Joseph W. ITaythorn, and that the articles bought and produced, in evidence were bought from the firm so constituted. It is also in testimony that the defendant had general supervision of the decoration of these bottles and other articles, and by the testimony of Mr. Benjamin, one of the witnesses for the defendant, it appears that he made experiments in Scharling’s establishment in Newark, in the presence of Scharling; that Scharling provided him with the silver solution which he (Scharling) ordinarily used to produce silver film on glass bottles; that he gave Mm two large bottles, each partially full of the solution; that the bottles upon which he made the experiments were given to him by Mr. Scharling, and were “those which Mr. Scharling plates and covers for the market.” Mr. Scharling showed the witness how to pour the solution over the bottles. He saw him do it, and saw Mm produce the film thereon. He showed him how to put in the cork and attach the rod that was to hold the bottle for convenient turning, and that all the tools and devices
. Again, President Henry Morton, a distinguished expert, called on behalf of the complainant, testifies that the bottles produced in evidence, and above referred to, were precisely like those made under the process of the patent in suit; that he had examined them superficially and microscopically, and was convinced that they were produced by the same method described in the Seharling patent; that in his experience as an expert, and from his examination in this case, he had been unable to discover the result attained in these bottles, when made by any other process than that of the patent in. suit. It is plain that Seharling was the managing and controlling superintendent of the firm of Seharling & Co., and he cannot be permitted to relieve himself of responsibility by interposing the firm through which, it is evident to the mind of the court, he acted. It is not without significance that when the defendant, John H. Schar-ling, was called to testify by the complainant, he was silent in regard to the process by which the bottles obtained from the firm of John H. Seharling & Co. were made. Nor did he avail himself of the liberty to deny that the bottles in evidence were made by the process described in the patent, nor did his counsel, by cross-examination, direct his attention to that point.
I conclude, therefore, that, under all the circumstances, the testimony must be taken as preponderating upon the side of the complainant’s allegation that John H. Seharling has infringed the rights secured by the patent in suit. If, however, the evidence as to actual past infringement, prior to the bringing of the suit and after the acquisition of title by the complainant, were less satisfactory, it would still remain true that there is undisputed evidence •of' the manufacture and sale by Seharling & Co. of articles precisely similar to the ones already described, since the bringing of this suit. It is in evidence that since the bringing of the suit the firm of Seharling & 'Co. has been incorporated, but it is clear that the defendant bore the same relation to the corporation, and the corporation to hiin, as existed between the firm and him. This testimony, taken in connection with the other testimony in the case, supports the allegation in the bill of intended infringement and trespass upon the rights secured by the patent in suit, and justifies the prayer of complainant for the issuance of an injunction by this court. Let a decree be framed accordingly.